Ex Parte Duan et al

Patent Trial and Appeal Board

Jan 13, 2017

13007610 (P.T.A.B. Jan. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/007,610 01/15/2011 Zhiyong Duan 4532670/97553-KEM 176 7068
26386 7590 01/18/2017
DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C.
THE DAVIS BROWN TOWER
215 10TH STREET SUITE 1300
DES MOINES, IA 50309
EXAMINER
SAYALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
01/18/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kentherink @ davisbrownlaw .com
pattylaw@davisbrownlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIYONG DUAN, YONGCAI LIU,
DONG CHEN and YE LAO
Appeal 2015-008200
Application 13/007,610
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 7—9. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appeal 2015-008200
Application 13/007,610
Appellants’ appealed invention is illustrated by independent claim 7,
reproduced below:
7. A method of increasing the level of a carotenoid in the
milk of a ruminant animal by protecting the carotenoid against
degradation in the rumen of the ruminant animal, comprising
the steps of:
(a) heating a solid oil above its melting point;
(b) admixing a carotenoid ester-containing oleoresin into
the melted oil;
(c) cooling the mixture until it solidifies;
(d) mechanically processing the solid mixture into an
animal feed composition; and
(e) feeding the animal feed composition to a ruminant
animal wherein the level of the carotenoid in the milk of the
ruminant animal is increased.
Appellants request review of the Examiner’s rejection of claims 7—9
under 35 U.S.C. § 103(a) as unpatentable over Du (WO 2009/027850 A3,
published March 5, 2009 and relying on US 8,034,983 B2, issued October
11, 2011, as the English equivalent)1; Funda (US 2007/0248683 Al,
published October 25, 2007); Ballet (Ballet et al., 19 Vitamins in Forages,
Forage Evaluation in Ruminant Nutrition 399-431(2000); Noziere et
al., Carotenoids for ruminants: From forages to dairy products 131 Animal
1 The Examiner’s rejection statement in the Final Action does not identify
the English equivalent relied upon. A review of the prosecution record
indicates US 8,034,983 B2 to Du was designated as the English equivalent
by the Examiner. Accordingly, any discussion of Du in the opinion will
refer to this US patent.
2
Appeal 2015-008200
Application 13/007,610
Feed Science and Technology 418-450 (2006); Popplewell (US
6,245,366 Bl, issued June 12, 2001); and Wellons (US 5,206,041, issued
April 27, 1993). App. Br. 8.
OPINION2
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s prior art rejection of claims 7—
9 for the reasons presented by Appellants. We add the following.
Independent claim 7 is directed to a method of increasing the level of
a carotenoid in the milk of a ruminant animal by admixing the carotenoid
ester-containing oleoresin with an oil to make the carotenoid resistant to
degradation in the rumen. Spec. 12.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 2—5.
Appellants argue the cited art does not disclose the use of
hydrogenated oil as a physiologically acceptable carrier for the purposes of
protecting carotenoids against ruminal degradation to increase the level of a
carotenoid in the milk of a ruminant animal as claimed. Reply Br. 2—5; App.
Br. 10-13. Appellants additionally argue the Examiner has not provided any
rationale as to why a person having ordinary skill in the art would have been
motivated to combine carotenoids and oil for the purposes of protecting
carotenoids against ruminal degradation with a reasonable likelihood of
success given that Noziere, Ballet and Popplewell do not teach or suggest
2 We limit our discussion to independent claim 7.
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Appeal 2015-008200
Application 13/007,610
how carotenoids can be protected against ruminal degradation. Reply Br. 3—
5; App. Br. 11—12.
We agree with Appellants. The Examiner found the combined
references of Ballet and Noziere disclose feeding the carotenoid to animals
and that the reduced degradation of carotenoids by using protected sources
or in preserved forages would increase carotenoid levels in milk. Final Act.
3^4; Noziere 248, Ballet 416. Ballet also discloses supplementing animal
feeds with an encapsulated vitamin A that significantly reduces the rate of
vitamin A degradation in the rumen to address vitamin deficiency issues
related to metabolic disorders of the animal. Ballet 399 and 420. The
Examiner also found Popplewell discloses the steps of mixing the active
agent (such as vitamins) with molten oil and cooling the slurry to form the
solid mass for use in food products. Final Act. 4; Popplewell col. 5,1. 63-
col. 6,1. 10 and col. 6,11. 22—28. However, the Examiner directs us to no
portion of these references that disclose mixing carotenoids with oils to
protect carotenoids against ruminal degradation to increase the level of a
carotenoid in the milk of a ruminant animal as claimed. The Examiner has
not provided an adequate technical explanation of why one skilled in the art
would have found the method for encapsulating vitamins would have been
suitable for encapsulating carotenoid with a reasonable expectation that such
encapsulation would protect the carotenoids as claimed.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
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Appeal 2015-008200
Application 13/007,610
Accordingly, we reverse the Examiner’s prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by Appellants and given above.
ORDER
The Examiner’s prior art rejection of claims 7—9 is reversed.
REVERSED
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